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Parties Settle Trademark Dispute on Eve of Trial

Posted in Settlement

SPSS Inc. v. Nie, No. 08 C 66 (N.D. Ill.) (Darrah, Jr.).

The parties recently settled this trademark dispute shortly before trial.  For more on the parties’ history and the settlement, click here for Chicago Tribune reporter and Chicago Law blogger Ameet Sachdev’s reporting on the case in the Tribune, and click here for more coverage of the case in the Blog’s archives.

IP News Shorts

Posted in Legal News

Here are several stories and updates, as well as a new IP blog:

  • At Patently-O, Dennis Crouch covers the Federal Circuit decision in the appeal from the Northern District of Illinois case SourceOne Global Partners, LLC v. KGK Synergize, Inc. – Click here for Crouch’s post on the appeal and here for my post on the underlying decision.
  • The latest installment of Doug Lichtman’s IP Colloquium is available — click here to listen.  Lichtman and his guests from Microsoft, Paramount Pictures and MySpace discuss the protection of content in the digital age.  As always, it is an excellent listen and CLE credit is available.
  • Seattle Trademark Lawyer Michael Atkins has another great post up about Olympic trademarks, this time featuring an article that ran in the Chicago Tribune (here) and LA Times (here) quoting both Atkins and me.
  • California attorney and mediator Erica Bristol has started the IP Watchtower blog.  The blog covers all facets of intellectual property and the initial posts suggest it will be a great read.  I have added it to my feed reader.

Chicagoan to Become Deputy Director of the Patent Office

Posted in Legal News

Congratulations to Sharon Barner, a Chicagoan and the head of Foley & Lardner’s IP practice.  Barner has been nominated to become the next Deputy Director of the Patent & Trademark Office.  Based upon reputation and my limited contact with Barner, including among others speaking on a panel at Northwestern with her, the administration made an excellent choice.  For more on the nomination, check out Patently-O and Chicago Law.

Senator Durbin Sends Northern District Judicial Nominees List to President Obama

Posted in Legal News

Illinois’s senior senator Dick Durbin recently sent President Obama the names of seven nominees to fill three vacancies on the Northern District of Illinois bench.  The nominees are AUSA Edmond Chang, Illinois appellate Judge Sharon Coleman, Magistrate Judge Susan Cox (click here to read about Judge Cox’s IP opinions in the Blog’s archives), Thomas Durkin, Gary Feinerman, Mary Rowland and Magistrate Judge Maria Valdez (click here to read about Judge Valdez’s IP opinions in the Blog’s archives). 

Here are biographies of each nominee from Senator Durbin’s press release:

Chang has served as an assistant U.S. attorney in the Northern District of Illinois since 1999, and he is currently the chief of appeals.  He previously worked as an associate at Sidley Austin, and as a judicial law clerk to Judge Marvin Aspen in the Northern District of Illinois and Judge James Ryan on the U.S. Court of Appeals for the 6th Circuit. He has served as an adjunct professor at Northwestern University law school, where he graduated with honors and served on the law review. He lives in Northbrook.

Coleman is a judge on the Illinois Appellate Court, following her election in 2008. She served as a judge on the Circuit Court of Cook County from 1996 to 2008. Before that, she was a supervisor in the Cook County state’s attorney’s office and an assistant U.S. attorney in the Northern District of Illinois. She has served on the boards of numerous bar associations and public interest organizations. She is a graduate of Washington University law school in St. Louis, and she lives in Chicago.

Cox has been a U.S. Magistrate Judge in the Northern District of Illinois since 2007. She previously worked as a litigator at several Chicago law firms, as an assistant U.S. attorney in the Northern District of Illinois, and as a judicial law clerk to Judge Wayne Andersen in that district. Judge Cox has served on the boards of many bar associations and public interest organizations. She has taught as an adjunct professor at DePaul University law school, and she is a graduate of Boston University law school, where she served on the law review. Judge Cox lives in LaGrange.

Durkin has been a partner at Mayer Brown since 1993 and was the chair of the firm’s pro bono committee for nearly a decade. He previously served as an assistant U.S. attorney in the Northern District of Illinois for over twelve years.  He served as a judicial law clerk to Judge Stanley Roszkowski in the Northern District of Illinois. He is a graduate of DePaul University law school, where he has taught as an adjunct professor. Durkin lives in Downers Grove.

Feinerman has been a partner at Sidley Austin since 2007. From 2003 to 2007, he served as Illinois’s solicitor general, and before that he was a partner at Mayer Brown.  He has argued numerous cases before the U.S. Supreme Court and Illinois Supreme Court. He served as a judicial law clerk to Justice Anthony Kennedy on the U.S. Supreme Court and Judge Joel Flaum on the U.S. Court of Appeals for the 7th Circuit in Chicago. He has served on numerous boards and is the president of the Appellate Lawyers Association of Illinois. He graduated from Stanford Law School and lives in Winnetka.

Rowland is a partner at the Chicago law firm of Hughes Socol Piers Resnick & Dym, where she has worked since 2000. From 1990 to 2000, she worked at the Federal Defender Program in Chicago, including five years as the chief appellate attorney. She has served on numerous boards. She was a judicial law clerk to Judge Julian Cook in the Eastern District of Michigan, and she is a graduate of the University of Chicago law school. Rowland lives in Oak Park.

Valdez has been a U.S. Magistrate Judge in the Northern District of Illinois since 2005. From 1992 to 2005, she was the Chicago regional counsel and staff attorney for the Mexican American Legal Defense and Educational Fund. Prior to that, she worked as a Deputy Federal Public Defender in California. She has served on many boards. She is a graduate of the University of California-Hastings law school, and she lives in Western Springs.

A hat tip to Ameet Sachdev at the Chicago Tribune’s Chicago Law Blog for identifying this story last week.

Patent News: Patent Reform & Supreme Court Shortlist

Posted in Legal News

Here are a few stories that do not warrant a full post:

  • The mainstream media and the blogosphere are buzzing with predictions of who is on President Obama’s shortlist for replacing Justice Souter  The Northern District’s Judge Castillo and the Seventh Circuit’s Judge Wood are both making many of the lists — check out one list at the Daily Writ.  Both excellent choices.  Over the weekend, the Chicago Tribune ran a story about a local expectation that someone connected to the University of Chicago would be appointed to the Supreme Court during the Obama presidency.  I also wonder if the Northern District’s Judge St. Eve is or should be on some shortlists.
  • Ronald Slusky is bringing his two-day patent claim drafting seminar to Chicago May 19-20.  Slusky promises to teach "a comprehensive approach to analyzing inventions and capturing them in a sophisticated set of patent claims.  Through this interactive seminar, participants will enhance their skills in a classroom setting."  I have not attended Slusky’s seminar myself, so I cannot speak to its value, but it definitely looks interesting.

  • Last week the House held hearings about the Patent Reform Act.  Check out some commentary on the hearings at Patently-O.
  • I got out of the habit of posting each week’s Blawg Review, but last week’s was both too good and too unique to pass up.  Blawg Review #209 is up at John Hochfelder’s New York Injury Cases Blog (another LexBlog site) — read it here.  Hochfelder tells the moving story of his father’s life, the life of an American hero.   Blawg Review #210 is also available at the China Law Blogclick here to read it.  It is also an excellent Review based loosely on the 90th anniversary of China’s May 4th Movement.

Tribune on IP & Law

Posted in Legal News

The Chicago Tribune had two interesting legal stories earlier this week:

  • The Tribune’s Jamie Herzlich wrote a good article explaining the basics of trademarks, including why and how to file them — click here for the article.  It is a great first resource for anyone looking at trademarks for the first time.
  • The Tribune’s Ann Therese Palmer wrote about and interviewed Pedro DeJesus, Senior Vice President, General Counsel and Secretary of Tampico Beverages, a Chicago-based company that is the leading refrigerated juice drink manufacturer — click here for the article.  DeJesus, a former associate at DLA predecessor Piper Rudnick, does not appear to have an IP focus.  But his story captured my attention, probably because, like me, he went to law school focused on public interest law, but ended up entering and enjoying commercial legal services.  It is especially worth a read for current and aspiring law students.  I echo Judge Castillo’s advice to DeJesus that anyone planning to do public interest law would benefit from some big firm experience.  Big firms provide exposure to many facets of the law, including exciting public interest opportunities. 

State of the Northern District is “Good”

Posted in Legal News

According to Chief Judge Holderman during the annual state of the Northern District speech, the state of the Northern District is "good" — click here for the Northern District’s statement regarding the speech.  The Northern District was briefly at full capacity, between Judge Dow’s appointment to the Northern District and Judge Filip’s resignation to join the Department of Justice.  Other highlights of the presentation included:

  • The Northern District remains in the top ten districts in terms of median time to civil case disposition at 6.2 months.
  • Magistrate Judges Brown and Mahoney were reappointed to additional eight year terms; and
  • The Northern District’s 2007 civil case load remained nearly constant, falling only .5% from its 2006 level.

The Northern District’s steady civil case load is especially impressive in light of the Seventh Circuit’s reduced case load in 2007.  The Chicago Tribune’s Ameet Sachdev reported — click here for the story — that the Seventh Circuit’s Chief Judge Easterbrook, during his state of the Seventh Circuit speech, reported that the Seventh Circuit’s case load dropped 10% for the second year in a row.  Sachdev noted that federal appellate court case loads had averaged a 5% drop per year since 2000.  And Easterbrook explained the Seventh Circuit’s 10% drop for 2007 as based upon two primary factors:

  • The Seventh Circuit’s district courts saw an overall 6% drop in their case loads; and
  • The Seventh Circuit’s preference for bright line rules over totality of the circumstance tests made it easier for entities to settle their disputes, saying:

Rules make it easier for private parties to avoid litigation, or settle their disputes, without asking for appellate evaluation in every case.

Blawg Review & Avoiding Jury Duty

Posted in Legal News

Blawg Review #160 is available across the pond at Ruthie’s Law.

And the Chicago Tribune’s R. Kelly trial blog, Gavel to Gavel, has an enlightening post about numerous answers (read "excuses") that got potential jurors knocked out of the R. Kelly trial jury pool.*  My favorite:

A legal secretary wrote on her questionnaire, "I believe Mr. Kelly is guilty of the charges due to what I have read in the papers, and the fact that he was indicted by the grand jury further validates my beliefs." The woman and her perfectly worded response were excused. Lest she think she pulled a fast one on the court, Cook County Judge Vincent Gaughan knew her answer had been coached.

*  Hat tip to Legal Antics for reminding me about the article.

Identity Theft: The Perils of Social Networking Sites

Posted in Legal News

In Sunday’s Chicago Tribune, Josh Noel reported on the town of Cicero’s efforts to identify the creators of two MySpace pages containing false and allegedly defamatory statements about Cicero Town President Larry Dominick and claiming to be authored by him– click here for the story.  The incident and Noel’s story raise questions about the problems with the anonymity of the internet that are equally interesting and difficult.  Noel talked to me about the difficulties of policing social networking sites for the story.  Here are my quotes:

"There’s an element of this we just have to live with," said Dave Donoghue, an attorney with DLA Piper who specializes in intellectual property litigation. "It’s impossible to have large-scale social networking sites, which people clearly want, without having some risk of this."

Greater policing of social networking sites would be impractical, Donoghue said, comparing it to air travel.

"To make air travel 100 percent safe, the background checks and checks of personal possessions of each individual getting on an airplane would be so cumbersome, time consuming and expensive, it would make air travel impractical," he said. "There has to be a balance."

Chicago Litigation News: New Chicago Trial Blog

Posted in Legal News

The Chicago Sun-Times has begun live blogging the R. Kelly trial in Cook County state court at its new blog the Kelly Chronicles.  As with the Chicago Tribune’s Rezko trial blog, Rezko Gavel to Gavel, the Kelly Chronicles is not IP-related.  But regardless of the legal claims, trial blogs are a great way to get a non-legal perspective on a trial from start to finish.  Fortunately for Chicago-area litigators and litigants, the Chicago papers have begun actively live-blogging local trials which should provide a wealth of this kind of information. 

Creator Returns to Inspect “Reconstructed” Work of Art

Posted in Legal News

The Chicago Tribune’s Ameet Sachdev reported that an ongoing copyright dispute may be coming to a head at the corner of Michigan Avenue and Randolph Street in Chicago, click here for the Tribune article.  In the 1980s, Israeli artist Yaacov Agam was commissioned to create a sculpture for what would become the Stone Container building at 150 N. Michigan Avenue.*  Over time, Chicago weather faded the work and the current owner hired an expert to restore the multi-hued work to its original look.  Agam is unhappy with the restoration because he believes the colors were not restored to the exact shades he originally used.  The work is now back on display at the corner of Michigan and Randolph, and Agam is headed to Chicago this weekend to view the restored, or as he calls it "reconstructed," work.

In a previous Tribune article,** Agam’s counsel admits that VARA, the Visual Artists Rights Act, did not protect Agam’s position because the work was created before 1990 and because Agam no longer owns his work.  But Agam claimed to hold the copyright in the work and argued that the copyright allowed him to prevent the current owner from creating a derivative work, which Agam believed the restored or reconstructed work to be because of the changed colors.  The dispute is likely governed by the contract commissioning Agam to make the work.  Of course, it is possible, and maybe even likely, that the contract is silent or ambiguous regarding derivative works or that it was an oral contract without proof of what the parties intended.  It will be interesting to see how the dispute is resolved and, I am sure, people who work in the area will be glad that the wooden stump that stood in the work’s place has been replaced by some restored version of the work.

Click here for a picture of the sculpture and further discussion of this dispute at the One-Way Street

**  Click here to read the blog’s post about that article.

Live Northern District Trial Blog

Posted in Trial

The Chicago Tribune has set up a live blog, written by Bob Secter and Jeff Coen, of the government’s criminal case against Tony Rezko.  The blog promises daily, "gavel-to-gavel" coverage of the Rezko trial — click here for background on the case from the Tribune.  This case does not have an intellectual property angle that I am aware of, but it provides an excellent view of a trial as seen through the eyes of non-lawyers, a very important perspective for litigators.  Additionally, Judge St. Eve gets at least her share of IP cases — click here for discussion of Judge St. Eve’s opinions in the Blog’s archives.*

Here is some of the Tribune’s coverage of the voir dire from yesterday, largely performed by the Court:

Another potential juror, No. 475, teaches cooking classes, often on Fridays. St. Eve sounded as if she was ready to work with the cooking teacher to accommodate her schedule. "If we structured the trial so that it would go Mondays through Thursday and not have trial on Fridays, the days you have cooking classes, would that be good for you?" the judge asked.

Some of St. Eve’s questions were more chatty than legal. The cooking teacher, for example, was asked what was on the menu at her next class. The answer: Beef Bourguignon and mashed potatoes.

Another juror was asked where she liked to go snowboarding. Still another was asked about her desire to learn Spanish. "Have you learned any words yet?" the judge asked.

"Just the bad things," the woman responded.

St. Eve also complimented No. 475 on an answer the prospective juror gave to a presubmitted question about whether people who contribute to a campaign should expect something in return. "A thank-you would be nice," the woman wrote.

I will keep an eye on the Tribune’s blog and will highlight other especially interesting items from it.

*  Judge St. Eve also gets her share of high profile cases.  She must be tired of the publicity after having the Conrad Black trial and now the Rezko trial within twelve months of each other.

Judge Filip to Get Senate Confirmation Vote

Posted in Legal News

The Chicago Sun-Times reported that Judge Filip’s nomination as Deputy Attorney General has cleared one of its final hurdles — click here for the story.  Senator Dick Durbin (D-Ill.) agreed to remove a hold placed on Judge Filip’s confirmation vote after Attorney General Michael Mukasey answered Senator Durbin’s questions regarding the legality of interrogation techniques.  According to a Chicago Tribune story (click here for the story), Judge Filip is expected to be confirmed by the Senate.  Of course, that is not surprising since the Senate previously confirmed him to become a federal district judge.

Tribune on Patent Bounties

Posted in Legal News

The Tribune ran a story in its weekly legal industry column yesterday about Ray Niro, senior partner in local patent litigation firm Niro Scavone and a very accomplished trial attorney. Niro is in a dispute with anonymous blogger Troll Tracker. Troll Tracker focuses his blog on cases brought by patent licensing companies or non-practicing entities,* a number of whom are represented by Niro and the Niro Scavone firm. Because of the firm’s prominence in plaintiff-side patent work, Troll Tracker has also discussed both Niro and the firm. That drew Niro’s attention. Niro sent the anonymous Troll Tracker a letter accusing him of infringing a patent held by client Global Patent Holdings which the Tribune described as “covering the compression of data over the Internet, a technology that allows, for instance, Web sites to display JPEG images.” Niro then offered a $5,000 “bounty” for unmasking Troll Tracker’s identity, which he later increased to $10,000. Here is how Niro explained the bounty in the Tribune article:

I want to find out who this person is . . . . Is he an employee with Intel or Microsoft? Does he have a connection with serial infringers? I think that would color what he has to say."

I have generally stayed away from this story because it is closer to patent gossip than the Northern District IP litigation that is the focus of this blog. But I felt that I should cover it since it ran in the Tribune. 

* I have posted before about my dislike of the patent troll name – click here for a post which discussed the Troll Tracker blog and here for a post about Ray Niro’s article calling for an end to the use of patent troll. I think it carries unnecessary baggage and creates unnecessary animosity in legal proceedings that tend to generate plenty without injecting more. So, I was glad to see last week that Troll Tracker is pulling away from the use of the name – click here for Troll Tracker’s post about the term.

The Chicago Tribune & David Donoghue on Strategic Patenting

Posted in Legal News

This morning the Chicago Tribune ran an article (click here for the Tribune’s piece) based upon IFI Patent Intelligence’s ranking of 2007′s top U.S. patent assignees — click here for IFI’s press release.   The article focused on Motorola’s movement from number 34 in 2006 to 44 in 2007.  Motorola explained that it has shifted focus from a goal of being one of the largest patent assignees to a more limited portfolio focused around Motorola’s core technologies.  I was quoted in the story about the value of what I refer to as "strategic patenting":

Motorola’s approach is a more common one across industries, said David Donoghue, special counsel at DLA Piper in Chicago who specializes in intellectual property. In general, most companies are "focusing their patenting efforts on their most important technologies and their biggest innovations — the things that differentiate them from their competitors," Donoghue said.

There is also value in having a large patent portfolio, particularly if you need to use your portfolio for cross-licensing or defensively against a patent-aggressive competitor, or if you are not sure which of your technologies will drive your industry and profits in five or ten years. 

Shortly after reading the Tribune article this morning, an IPLaw 360 article caught my attention (click here for the story, subscription required).  The article discussed a study by Morgan Lewis attorneys Craig Opperman and Carina Tan (to read the Intellectual Asset Management article about Opperman’s and Tan’s research, click here on Opperman’s biography and click the link to the article in the upper right hand corner of the page).*  Opperman and Tan argue that a high volume, low cost (per application) patenting strategy has a greater final cost than a strategic patenting strategy in which a company pays more for each individual application, but files fewer applications clustered around their core technologies.  They also offer to provide a spreadsheet proving their analysis to anyone who contacts them and asks for it.  It is an interesting premise.  Of course, it does not appear to take in to account those companies that have a high volume strategy without unnaturally driving down their patent costs.  I think few would argue that, if a company has the resources either in terms of in-house prosecutors or prosecution budget, more high value patents are better than fewer high value patents. 

*  I would provide you a pdf of the article, but I want to stay on the right side of the copyright laws.

Tribune on Patents

Posted in Legal News

The Chicago Tribune has had a few IP-related articles this week. First, the Tribune reported – click here for the story — that the House is about to take up a bill that would allow an abbreviated approval process for generic versions of biotech drugs, commonly known as biosimilars or biogenerics, similar to abbreviated new drug applications. The Senate Health, Education, Labor and Pensions Committee approved a similar bill in June, called the Biologics Price Competition and Innovation Act of 2007.

Second, the Tribune reported – click here for the story – about a new book, "The Telephone Gambit: Chasing Alexander Graham Bell’s Secret," by Seth Shulman — which argues that Alexander Graham Bell, one of America’s most famous patentees, stole his most famous invention, the telephone, from his rival Elisha Gray. And Shulman argues that he was aided by attorneys and a corrupt patent examiner.  The book is due out January 7. It looks like it could be an interesting read.

Third, the Tribune reported – click here for the story — that the Federal Circuit reversed in part the Western District of Wisconsin’s April 2007 decision which held that Google’s AutoLink and AdSense feature did not infringe HyperPhrase’s patents. The Court upheld Judge Shabaz’s decision that AdSense did not infringe the patents and remanded the case for further proceedings regarding whether the AutoLink feature infringed two of the patents in suit. Click here for a copy of the Federal Circuit decision.

Northwestern Gets $700M for Royalty Rights

Posted in Legal News

The Chicago Tribune reported last week — click here for the story – that Northwestern University received $700M from Royalty Pharma in exchange for certain of Northwestern’s royalty rights to its patents covering pregabalin.  Pregabalin is a key component of Pfizer’s Lyrica, which is used to treat nerve pain associated with diabetes, shingles and fibromyalgia.  Northwestern plans to use some of the money to fund its new nanotechnology initiative.

I will be on a panel at Northwestern’s IP Law Week next month.  Perhaps in light of Northwestern’s new found wealth I should have requested a speaker’s fee.  Seriously though, this will be a great event and is worth your time if you are in town.  They have not published their literature on the event yet, but as soon as they do I will post it.

Sugar Battle is Not Sweet

Posted in Legal News

On Sunday, the Chicago Tribune reported on the latest round of the Sugar v. Splenda fight (click here for the article).  An initial hearing was scheduled for yesterday in the Central District of California regarding the suit five U.S. sugar companies — American Sugar Refining Inc., C&H Sugar Co. (owned by American Sugar), Imperial Sugar Co., Rio Grande Valley Sugar Growers Inc. and Western Sugar Cooperative (collectively "Sugar Companies") — brought against Johnson & Johnson’s McNeil Nutritionals ("McNeil") which makes Splenda.  Splenda is a sugar substitute which McNeil advertises with the tagline, "tastes like sugar."  The Sugar Companies alleged that the "tastes like sugar" advertising campaign was false advertising in violation of the Lanham Act.  And they further alleged that McNeil continued its advertisements despite knowledge that consumers were confused.  McNeil countered that consumers were not misled by its advertisements.

The parties have engaged in various out-of-court disputes as well as this action and the two cases already settled, one in France and one in the United States.  For example, the parties maintain opposing websites regarding Splenda:  McNeil’s is www.splendatruth.com and the Sugar Companies maintain www.truthaboutsplenda.com

Artist Agam Uses Copyright to Control Restoration of his Art

Posted in Legal News

On Sunday, the Chicago Tribune reported that a copyright dispute is brewing on the corner of Michigan Avenue and Randolph Street in Chicago, click here for the Tribune article.  In the 1980s, Israeli artist Yaacov Agam was commissioned to create a sculpture for what would become the Stone Container building at 150 N. Michigan Avenue.*  Over time, Chicago weather faded the work and the current owner hired an expert to restore the multi-hued work to its original look.  Agam is unhappy with the restoration because he believes the colors were not restored to the exact shades Agam originally used. 

Agam’s counsel admits that VARA, the Visual Artists Rights Act, does not protect Agam’s position because the work was created before 1990 and because Agam no longer owns his work.  But Agam claims to hold the copyright in the work and argues that the copyright allows him to prevent the current owner from creating a derivative work, which Agam believes the restored work to be because of the changed colors.  The dispute is likely governed by the contract commissioning Agam to make the work.  Of course, it is possible, and maybe even likely, that the contract is silent or ambiguous regarding derivative works or that it was an oral contract without proof of what the parties intended.  It will be interesting to see how the dispute is resolved and, I am sure, people who work in the area will be glad when the wooden stump currently in the work’s place is replaced by some restored version of the work.

Click here for a picture of the sculpture and further discussion of this dispute at the One-Way Street

A Dissenting Voice on Patent Reform

Posted in Legal News

In yesterday’s edition, the Chicago Tribune published a commentary on the Patent Reform Act of 2007 by Cummins-Allison Corp.’s Chairman William J. Jones — Cummins-Allison is based in Mt. Prospect, Illinois and develops and distributes coin and currency handling/counting machines.  Jones has strong feelings about the Act and offers some unique opinions.  First, he is against "harmonizing" US law with international patent laws, arguing that the European and Japanese systems are "parochial."  He also makes the, in my experience unfair although widely held, argument that the Chinese system "specializes in intellectual property theft."  I believe if you look at recent Chinese cases or the experts on Chinese IP law — like the excellent IP Dragon — you will see that China has become increasingly willing to protect the intellectual property of foreign entities, as long as the entities have invested in the necessary Chinese patents, trademarks, etc.

Jones notes that at the recent Congressional hearings, no manufacturing firms testified, despite some interesting statistics:

U.S. manufacturers undertake 60 to 70 percent of the nation’s research and development and hold 60 percent of its patents.

                                                                   * * *

. . . .  Roughly one-third of all patent applications are made by independent inventors, small manufacturers, universities and non-profit research groups. Their efforts are crucial for leading-edge scientific advances, and their views should be heard.

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Keyword Advertising Discussed at INTA

Posted in Legal News

The Chicago Tribune ran a story on the front page of Wednesday’s Business section about the use of trademarks in keyword internet advertising:  Trademark Battlefield.  The story discussed various efforts to stop internet search engines (like those offered by Google, Yahoo and Microsoft) from selling trademarked terms as search keywords.  For example, the story suggested that State Farm, an insurance company, may have purchased the name of its chief competitor, Allstate, from Google.  As a result, if you google "Allstate" Allstate’s websites will come up first in the search results, but in the upper right corner of the search results page, you will see a State Farm ad. 

The story also discussed comments from a Google trademark lawyer, Rose Hagan, during a standing-room-only panel at the International Trademark Association’s ("INTA") meeting on Monday, which was held in Chicago.  Hagan said that Google sells advertising space, not trademarks.  The story also notes that Utah has passed a law which prohibited the use of a competitor’s trademarks as advertising keywords.  For more on the Utah law, check out Eric Goldman’s Technology & Marketing Law Blog (via Marty Schwimmer’s Trademark Blog).  The Utah law and the various lawsuits against Google, Yahoo and Microsoft on this issue are all evidence that this is a very unsettled area of trademark law.  A Yahoo attorney, Laura Hauck Covington, explained that "[w]e’re all trying to find the right, reasonable balance for the owners of trademarks, consumers and advertisers."

Butkus Sues to Protect His Name

Posted in Legal News

Last Friday, the Chicago Tribune reported that Dick Butkus sued the Downtown Athletic Club of Orlando,* which gives out the Butkus Award to the nation’s premiere linebacker each year.  Butkus licensed the Club to use his name and likeness in connection with the Award and even helped the Club get and protect its rights in the Butkus Award.  But Butkus alleged that the Club concealed that helping it secure trademark rights would prevent Butkus from using his name in connection with other awards and/or charitable endeavors.  Butkus has attempted to terminate the parties’ agreement, but the Club has allegedly told him he has not right to terminate.  Butkus’s attorney was quoted in this USA Today story explaining that this suit was not about money.  Instead, Butkus believes that if he controls the award named after him, he can better benefit charities that he supports.

* He actually filed in the Central District of California  — Dick, nothing is more Chicago than you and Da Bears.  How could you file this suit in California?  But do not worry Chicagoans, Butkus’s attorney says that should Butkus when his suit, he will likely bring the Butkus Award and related activities to Illinois.  Welcome home Dick.

Redeye Preliminary Injunction Denied Despite Aurally Identical Marks

Posted in Legal News

Chicago Tribune Co. v. Fox News Network LLC, No. 07 C 0865, 2007 WL 1052508 (N.D. Ill. Apr. 4, 2007) (Bucklo, J.).*

Judge Bucklo denied plaintiff Chicago Tribune’s ("Tribune") motion for a preliminary injunction.  The Tribune sought an injunction which would have required defendant Fox News Networks ("Fox") to change the name of its "Redeye" late-night television news program based upon alleged infringement of the Tribune’s Redeye mark related to its Redeye newspaper.  The Court held that the Tribune had only shown a "possibility" that it would prevail on the merits.  The Court found that the Tribune’s Redeye mark was at least suggestive and, therefore a strong mark.  And the Court held that while the marks did not visually resemble each other, the Tribune proved a likelihood that the marks were aurally identical.  But the evidence did not favor the Tribune on either of the other two "most important" factors in deciding likelihood of confusion:  defendant’s intent and actual confusion.  No evidence showed that Fox "passed off" its program as coming from the Tribune, so the issue of Fox’s intent favored Fox.  As to actual confusion, the Tribune put forth a witness that testified that he suffered "momentary actual confusion" when he first learned of Fox’s Redeye program, but that it was cleared up almost immediately by someone he was talking with about the program.  Additionally, the witness did not have cable television, so could not watch the show.  While initial confusion can be sufficient to show actual confusion, the Court disregarded the witnesses testimony because he admitted that he was a consumer of neither the Tribune’s nor Fox’s products. 

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